United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
Michael G. Gotsch, Sr. United States Magistrate Judge
November 6, 2017, Defendants, Tasharina Corp.
(“Tasharina”) and Wal-Mart.com USA, LLC
“Defendants”), filed their Motion to Transfer
Venue to the Northern District of California Pursuant to
28 U.S.C. § 1404. On November 20, 2017,
Plaintiff filed a brief in opposition to Defendants'
requested transfer. Defendants' motion became ripe on
November 28, 2017, without any reply being filed. Under N.D.
Ind. L.R. 7-1(d)(2)(B), the Court allowed Defendants seven
days after Plaintiff's response brief was served to file
any reply brief. Without leave of court, Defendants
nevertheless filed an untimely reply brief on December 1,
2017. While typically the Court does not consider untimely
filings, the Court actually considered Defendants'
untimely reply brief in this case. As the analysis below
shows, however, Defendants' reply brief did not add
sufficient factual and legal information to affect the
Court's decision to deny the instant motion to transfer.
is an Indiana corporation with its principal place of
business in Michigan City, Indiana, which is located in the
Northern District of Indiana. Plaintiff manufactures
industrial gauges and controls, including pressure gauges and
indicating transmitters using the trademark MAGNEHELIC, which
was registered to Plaintiff in 1992. In 2008, Plaintiff also
received trademark registration for a gage lens design mark
used with its pressure gauges.
is a California corporation with its principal place of
business in Mountain View, California, located in the
Northern District of California. Tasharina sells assorted
commercial goods online through various retailers, including
the Walmart Marketplace on Wal-Mart.com. Since 2016,
Tasharina has imported and sold pressure gauges that it
ordered from a Chinese supplier called Yueqing ZhuoPin Meter
Co., Ltd. and conducting business at
www.magrfhelic.com. In 2016, Tasharina sold 11 units
of the MAGRFHELIC product in 4 separate sales totaling
$636.50. None of the 2016 sales were made to Indiana. As a
third-party seller on Wal-Mart.com, Tasharina sold 3 units of
the MAGRFHELIC product in 2 separate sales -both to Plaintiff
in Indiana-totaling $185.08 in 2017. Tasharina still has 22
remaining units of the MAGRFHELIC product in its inventory.
is a California corporation with its principal place of
business in San Bruno, California. Wal-Mart.com is a
subsidiary of Wal-Mart Stores, Inc., a Delaware corporation
with its principal place of business in Bentonville,
Arkansas. Even though Wal-Mart Stores, Inc. maintains
multiple brick-and-mortar stores throughout the Northern
District of Indiana, Wal-Mart.com maintains no facilities in
this District. As relevant here, Wal-Mart.com policy allows
customers to return products at Wal-Mart stores only if they
were sold and shipped by Wal-Mart.com. Items sold and shipped
by third-party sellers on the Wal-Mart Marketplace cannot be
returned to Wal-Mart stores.
upon its registered marks, Plaintiff filed a complaint
against Defendants in this Court on August 15, 2017, alleging
federal claims of counterfeiting and infringement of
registered trademarks; trade dress infringement; use of false
designations or origin; and use of false and misleading
descriptions and representations; as well as a state common
law claim of unfair competition. Defendants answered on
September 22, 2017. This case is currently set for a Rule 16
Preliminary Pretrial Conference on December 7, 2017. The
parties' joint proposed discovery plan, as required under
Fed. R. Civ. P. 26(f) was due on November 30, 2017.
Before that deadline passed, Defendants filed the instant
motion to transfer arguing that the convenience of the
parties and the interest of justice favors resolution of
these claims in the Northern District of California. As of
this date, no proposed discovery plan has been filed.
to 28 U.S.C. § 1404(a), a federal district court may
transfer any civil action to any other district for the
convenience of the parties and witnesses and in the name of
justice if venue is proper in both courts. Therefore,
transfer analysis involves separate inquiries into (1) proper
venue in both the transferor and transferee courts; (2) the
convenience of parties and witnesses; and (3) the interest of
justice. Research Automation Inc. v. Schrader-Bridgeport
Int'l, Inc., 626 F.3d 973, 978 (7th Cir. 2010). The
burden is on the movant to show that transfer is warranted.
Coffee v. Van Dorn Iron Works, 796 F.2d 217, 219-20
(7th Cir. 1986). However, the statute allows for a
“flexible and individualized” analysis of the
unique issues raised in a particular civil action, which
therefore places considerable discretion in the transferor
court when deciding whether transfer is appropriate.
Research Automation, 626 F.3d at 977-78 (citing
Stewart Org., Inc. v. Ricoh Corp.,, 487 U.S. 22, 29
no party disputes that venue is proper in both the Northern
District of Indiana and the Northern District of California.
Therefore, the Court need only consider the convenience of
the parties and witnesses and the interest of justice in
reaching its decision on Defendants' instant motion.
Convenience of the Parties and Witnesses
evaluating the convenience element, courts generally
consider: (1) the plaintiff's choice of forum; (2) the
situs of material events; (3) the relative ease of access to
sources of proof; (4) the convenience of witnesses; and (5)
the convenience of the parties. Schumacher v. Principal
Life Ins. Co., 665 F.Supp.2d 970, 977 (N.D. Ind. 2009).
“The movant . . . has the burden of establishing, by
reference to particular circumstances, that the transferee
forum is clearly more convenient.” Coffey v. Van
Dorn Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).
Plaintiff's Choice of Forum and Situs of Material
plaintiff's choice of forum is entitled to substantial
deference, especially when the chosen forum is the
plaintiff's home forum. Am. Commercial Lines, LLC v.
Ne. Maritime Inst., Inc.,588 F.Supp.2d 935, 945 (S.D.
Ind. 2008). Yet, the plaintiff's choice of forum
is not always the controlling factor for the court when the
totality of the factors suggests a stronger nexus between the
transferee court and relevant events. Research
Automation, 626 F.3d at 979. ...